XPO Logistics, Inc. v. Ojong Eunice Mopka
Claim Number: FA2307002052891
Complainant is XPO Logistics, Inc. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, US. Respondent is Ojong Eunice Mopka (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xpologisticsdelivery.com>, registered with Tucows Domains Inc.
The undersigned certifies that he have acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on July 12, 2023; Forum received payment on July 12, 2023.
On July 13, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <xpologisticsdelivery.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xpologisticsdelivery.com. Also on July 14, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a global provider of transportation and logistics solutions. XPO and XPO LOGISTICS are well-known trademarks for the services provided by the Complainant.
The disputed domain name was registered long after Complainant’s XPO and XPO LOGISTICS names and trademarks became known in the United States and other countries around the world. The Respondent use the disputed domain name for a website that attempts to pass itself off as Complainant to offer alleged air cargo, freight and logistics services. The website even includes a video of the Chief Executive Officer of the Complainant.
The <xpologisticsdelivery.com> domain name is identical or confusingly similar to Complainant’s XPO and XPO LOGISTICS trademarks because it fully consists of the XPO and XPO LOGISTICS trademarks, only adding the word “delivery”.
Respondent cannot demonstrate or establish rights or legitimate interest in the domain name, as the Respondent is not commonly known by the disputed domain name, Respondent chose to conceal his or her identity with a privacy service, and has used the disputed domain name in an attempt to pass itself off as Complainant. Moreover there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating the XPO or XPO LOGISTICS names and trademarks. Respondent is not an authorized affiliate of Complainant and there has never been any legitimate business relationship between Complainant and Respondent. Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of <xpologisticsdelivery.com>. Rather, Respondent appears to have registered and is using the domain name solely for financial gain by passing itself off as Complainant.
Respondent has registered and used the Domain Name in bad faith for commercial gain and to benefit from the goodwill and reputation associated with Complainant’s XPO and XPO LOGISTICS names and trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,566,280 XPO (word), registered July 15, 2014 for services in Intl Classes 35, 36, 39;
No. 4,175,359 XPO LOGISTICS (fig), registered July 17, 2012 for services in Intl Class 39;
No. 6,600,035 XPO (word), registered December 28, 2021 for services in Intl Classes 35, 39, 40; and
No. 4,227,242 XPO LOGISTICS (word), registered October 16, 2012 for services in Intl Class 39; and
No. 6,125,212 XPO DIRECT (word), registered August 11, 2020 for services in Intl Classes 35 and 39.
Complainant has also provided evidence of trademark registrations for XPO in European Union, Canada, Mexico, China, and as an International Registration designating 19 countries around the world.
The disputed domain name <xpologisticsdelivery.com> was registered on July 7, 2023.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the XPO and XPO LOGISTICS trademarks based upon registrations with the USPTO (e.g. Reg. No.4,566,280, registered July 15, 2014, and Reg. No. 4,227,242 XPO, registered October 16, 2012), as well as in a number of other countries and regions around the world.
Registration of a trademark with multiple trademark national or international offices is sufficient to establish rights in said trademark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark). Therefore, the Panel finds that Complainant has rights in the BLOOMBERG trademark per Policy ¶4(a)(i).
Complainant argues that Respondent’s <xpologisticsdelivery.com> domain name is identical or confusingly similar to Complainant’s XPO LOGISTICS trademark. Under Policy ¶ 4(a)(i), adding generic or descriptive terms while misspelling a word and appending the “.com” gTLD is insufficient in differentiating from the mark. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). The disputed domain name merely adds “delivery” and the “.com” gTLD. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent is not commonly known by the <xpologisticsdelivery.com> domain name, nor has Complainant authorized or licensed Respondent to use its XPO and/or XPO LOGISTICS trademarks in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES trademark). The WHOIS information identifies Respondent as “Ojong Eunice Mopka” The Panel therefore find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, the Complainant argues that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the <xpologisticsdelivery.com>. Domain Name. Respondent has used the disputed domain name without permission or authorization from Complainant, to capitalize on the XPO and XPO LOGISTICS names and trademarks solely for commercial gain. Respondent has used, and is using, <xpologisticsdelivery.com> to impersonate Complainant as part of a likely fraudulent scheme to either trick consumers into providing package tracking information or personal information or for some other fraudulent or parasitic purposes. Such use of a domain name to impersonate a complainant as part of a fraudulent or for profit scheme is indeed not a legitimate interest or bona fide use. See, e.g., eSpeed Government Securities, Inc. & Aqua Securities, L.P. v. Aqua-Securities, WIPO D2007-1661 (“Respondent is not using the domain name in connection with a bona fide offering of goods or services.…[nor] making a legitimate noncommercial or fair use of the domain name. Rather, Respondent appears to have registered and is using the domain name solely for financial gain by passing itself off as Complainant …deceiving Internet users.”). See also Crow v. LOVEARTH.net, FA 203208 (Nov. 28, 2003) (“It is neither a bona fide offerings of goods or services, nor an example of a legitimate noncommercial or fair use…[when] the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant”).
Based on then evidence provided by the Complainant, the Panel find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant states that Respondent has registered and used the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and reputation associated with Complainant’s XPO and XPO LOGISTICS names and trademarks, further arguing that Respondent’s bad faith registration and use is established by the fact that (i) the disputed domain name fully incorporates Complainant’s exact XPO and XPO LOGISTICS trademarks, (ii) the domain name was acquired by Respondent well after Complainant’s established rights in the XPO and XPO LOGISTICS trademarks, and (iii) Respondent has used the disputed domain name for a website that impersonates Complainant and purports to offer services that are closely related to those of Complainant in likely furtherance of a fraudulent or other nefarious scheme to take advantage of unsuspecting consumers. See Volvo Trademark Holding AB v. SC-RAD Inc., WIPO D2003-0601 (bad faith registration was shown by registration of VOLVOPOLSKA.COM where complainant’s reputation was likely to attract Internet users to registrant’s website for commercial gain).
The Panel agrees with Complainant’s conclusion, and find that Respondent registered, and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xpologisticsdelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 21, 2023
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